The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com

Case No. D2007-0757

1. The Parties

The Complainant is The Trustees of the University of Pennsylvania, The Wharton School, University of Pennsylvania, Philadelphia, Pennsylvania, United States of America, represented by Flaster Greenberg P.C., United States of America.

The Respondents are Motherboards.com, College Station, Texas, United States of America, represented by ESQwire.com Law Firm, United States of America, and Moniker Privacy Services, Pompano Beach, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wharton.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2007, naming Moniker Privacy Services1 as the Respondent. On May 25, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 30, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response, indicating that Motherboards.com was listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on June 8, 2007, naming Motherboards.com as a Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2007. In accordance with the Rules, paragraph 5(d), the Center extended the Response due date to July 14, 2007. The Response was filed with the Center on July 13, 2007.

The Center appointed William R. Towns, John R. Keys, Jr. and David E. Sorkin as panelists in this matter on August 31, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant on July 20, 2007 lodged with the Center an unsolicited supplemental filing denominated “Complainant’s Reply”. The Respondent notified the Center on August 1, 2007 of its objection under the Rules, and requested leave to submit a supplemental filing in response. Expressly reserving its ruling on whether the Parties’ supplemental filings would be considered, the Panel granted leave to the Respondent to file a supplemental submission with the Center no later than September 21, 2007. The Respondent’s supplemental filing denominated “Reply to Complainant’s Additional Submission” was filed with the Center on September 21, 2007.

4. Factual Background

The Complainant is the owner and operator of The Wharton School, one of the top ranked business schools in the United States of America. The Complainant has registered and uses the trademark WHARTON in the United States of America and elsewhere for educational services. The Respondent Motherboard.com registered the disputed domain name <wharton.com> on March 3, 2000, after a previous registration of the domain name, apparently belonging to the Complainant, had lapsed.2

This case involves the relatively unusual situation of a “Refiled Complaint” – that is, a complaint regarding a domain name that was the subject of a previous complaint filed by the same complainant against the same respondent.3 The Complainant previously brought a UDRP action against the Respondent Motherboards.com respecting the disputed domain name in 2003. In The Wharton School of the University of Pennsylvania v. Motherboards.com, No. 161274 (NAF July 24, 2003) (“Wharton I”), the Panel determined that the Respondent Motherboards.com had established rights or legitimate interests in the <wharton.com> domain name through the commercial use of the domain name with a website devoted to issues unrelated to the educational services for which the Complainant’s mark was registered and used. The Wharton I Panel observed:

“[T]he word “WHARTON” is the name of three (3) towns, located in the States of Texas, New Jersey and Ohio, as well as the name of a famous author, Edith Wharton. Therefore, the word is both a geographical name and a surname. This does not make the word generic, but evidences that it is a term that has different uses and meanings.”

“[T]he trademark rights of the Complainant can not be enforced in this case against the Respondent, taking into account that the Respondent is making a legitimate commercial use of the domain name <wharton.com>, through a website devoted to different issues not related to the Complainant’s business school. The Panel visited the Respondent’s website on July 14, 2003, and found out that it offers a number of options to the visitors, including a hotel locator in Wharton, Texas, a link to an online book seller including Edith Wharton books, a search engine to locate people living in the town of Wharton, Texas, among others. This use suffices for the extent required by the Policy, to prove rights and legitimate interests in the part of the Respondent.”

The Wharton I Panel further found that the Respondent had not acted in bad faith respecting the registration and use of the disputed domain name. The Panel observed that a finding that the Respondent had rights and legitimate interests in the disputed domain name practically precluded any finding of bad faith registration and use, but also concluded as follows:

“[S]ince the Complainant did not provide any evidence of the bad faith in the part of the Respondent, the Panel is forced to conclude that such bad faith requirement has not been met. On the contrary, the Respondent has demonstrated its rights and legitimate interests over the domain name <wharton.com> and has filed evidence of its good faith in the registration and use of such domain name in connection with a bona fide offering of services related to the town of Wharton, Texas, United States of America. This evidence was formed by the affidavits rendered by the Respondent’s legal representative and by its website developer, where they explained the nature of the Respondent’s business and of its rights and legitimate interests over the disputed domain name.”

There appear to have been recent changes to the content of the Respondent’s website. When the Complaint in this case was first filed with the Center on May 10, 2007, the Respondent’s “Wharton.com website” contained pay-per-click advertising links to websites relating to business schools and educational services, including searchable categories for “Online Business Schools”, “Best Business Schools,” and “Online Learning.” The Respondent more recently has added a searchable category for “Wharton Texas” to the website.4 Insofar as this Panel can determine, the Respondent’s website presently contains no advertising links relating to business schools or other educational services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Refiled Complaint should be entertained under the Policy because it concerns acts occurring subsequent to the decision in the previous complaint that are not the same in substance as the acts on which the previous complaint was based. The Complainant points specifically to changes in the content of the Respondent’s website as of May 10, 2007. According to the Complainant, the Respondent’s website as of that date was “literally covered with advertising links for competing business schools and educational institutions.” These facts, the Complainant asserts, are obviously different from the situation addressed by the Wharton I Panel.

Regarding the elements of paragraph 4(a) of the Policy, the Complainant maintains that the disputed domain name incorporates its WHARTON mark in its entirety, and is identical or confusingly similar to the mark. The Complainant contends that the content of the Respondent’s website as of May 10, 2007 does not evince the Respondent’s exercise of a legitimate right in the disputed domain name, but instead evinces the Respondent’s attempt to profit from and exploit the goodwill established by the Complainant in its well known WHARTON mark. As far as the Respondent’s more recent addition to its website of a category for “Wharton Texas” is concerned, the Complainant argues that this change was only made after the initial filing of the Complaint in this case, is merely pretextual and reflects the actions of “an abusive registrant seeking to find some – or any – excuse for its registration.”5

The Complainant asserts that it cannot be mere coincidence that the Respondent registered the <wharton.com> domain name and now uses it primarily to generate pay-per-click revenue from advertising links to the Complainant’s competitors. According to the Complainant, the Respondent’s use of the disputed domain name is clearly an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s WHARTON mark within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant characterizes the Respondent’s more recent changes to its website to include a category of information on “Wharton Texas” as nothing more than a belated attempt to avoid a finding of bad faith. Further, the Complainant asserts that the Respondent’s provision of an obviously invalid telephone number in its contact information provided to the domain name registrar is evidence of bad faith. For these reasons, the Complainant urges that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent maintains that the Complainant lacks standing under the Policy to proceed with the Refiled Complaint. The Respondent contends that there are no new facts that could possibly exist to alter the decision in Wharton I. The Respondent argues that the new evidence relied on by the Complainant – the presence of links related to business schools on the Respondent’s website – pertains only to an alleged bad faith use of the disputed domain name, but does not constitute evidence of bad faith registration. According to the Respondent, once it is determined that a domain name was registered in good faith, no subsequent bad faith use of the domain name can alter this conclusion. Thus, to withstand a dismissal of a refiled complaint concerning a matter previously denied on the basis of an absence of bad faith registration, new evidence must be presented that the disputed domain name was registered in bad faith. According to the Respondent, no such evidence has been proffered here, and the Complainant therefore must be dismissed.

The Respondent’s position is that the appearance of business school links on its website some seven (7) years after the Respondent’s registration of the disputed domain name cannot be used to transform an otherwise good faith registration into a bad one, or to invalidate an established legitimate interest in the domain name. The Respondent further asserts that the business school links that have recently appeared on its website are the result of the “auto optimization” software of the third-party pay-per-click service that now hosts the Respondent’s website, and were not intended by the Respondent. The Respondent observes that for six years between 2000 and 2006 no links appeared on its website related to business schools. Instead, the Respondent asserts that it used the disputed domain name for web pages offering generic advertising links as well as links related to Wharton, Texas, and other uses of Wharton unrelated to the Complainant’s mark. The Respondent notes that “Wharton” is a geographically descriptive term, the name of a number of cities, and also a surname.

According to the Respondent, the term appears on over 2 million third party web pages in contexts completely unrelated to the Complainant or its mark. The Respondent concludes in view of the foregoing that the Complainant cannot prevent others from registering a domain names containing the term “Wharton” for unrelated and non-confusing uses.

6. Discussion and Findings

A. The Parties’ Supplemental Submissions

As noted above, subsequent to the filing of the Response, the Complainant submitted an unsolicited supplemental filing (“Complainant’s Reply”) to the Center. The Panel later considered and granted leave to the Respondent to submit a supplemental response. However, in so doing the Panel expressly reserved a ruling on whether the Parties’ supplemental filings would be considered in reaching its decision in this case. For the reasons set forth below, the Panel now concludes that the Parties’ supplemental submissions should not be considered.

No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either party without leave from the Panel. To the contrary, paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties, and the Policy and the Rules evince a clear preference for single submissions absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr.,
WIPO Case No. D2000-0427.

Panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission, Top Driver, Inc., v. Benefits Benefits,
WIPO Case No. D2002-0972; to bring new and highly relevant legal authority not previously available to the attention of the Panel, Pet Warehouse v. Pets.Com, Inc.,
WIPO Case No. D2000-0105; or to rebut arguments of the opposing party that could not reasonably have been anticipated, Radan Corp. v. Rabazzini Winery,
WIPO Case No. D2003-0353. Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306.

None of the exceptional circumstances that have prompted prior Panels to accept supplemental submissions are present in this case. The Complainant’s Reply does not introduce any new, pertinent facts not already presented in the Complaint and the Response. Further, the Complainant’s rebuttal does not address any arguments in the Response that could not reasonably have been anticipated in the Refiled Complaint. The Panel accordingly has determined that it will not consider the supplemental filings of the Parties in reaching a decision in this case.

B. Refiled Complaints and the Scope of the Policy

A “refiled complaint” for purposes of the Policy is a complaint respecting a domain name that was the subject of a previous UDRP complaint involving the same complainant and respondent who are involved in the subsequently filed complaint. See AB Svenska Spel v. Andrey Zacharov,
WIPO Case No. D2003-0527. There appears to be a consensus among UDRP panelists that a refiled complaint may be allowed under the Policy only in exceptional circumstances. See, e.g., Grove Broadcasting Co. Ltd.v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490.

In considering the circumstances in which refiled complaints should be entertained under the Policy, prior panel decisions reflect a tendency to draw a distinction between (i) refiled complaints concerning acts that formed the basis of the original complaint, and (ii) refiled complaints that concern acts occurring subsequent to the decision on the original complaint. See Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. The Refiled Complaint at issue here is characteristic of the second type identified in prior panel decisions. The Complainant argues that the Refiled Complaint should be entertained based on a change in the content of the Respondent’s website at or near the time of the initial filing of the Complaint in this case on May 10, 2007.

In either situation, there appears to be consensus regarding application of the following general principles:

(i) the burden of establishing that the refiled complaint should be entertained under the Policy rests on the refiling complainant;

(ii) the refiling complainant’s burden is high; and

(iii) the grounds which allegedly justify entertaining the refiled complaint should be clearly identified by the refiling complainant.

The question of whether sufficient grounds exist for entertaining a refiled complaint necessarily must be determined on a case-by-case basis. With this firmly in mind, the Panel is in general agreement with the approach of prior panels to refiled complaints concerning acts occurring subsequent to the decision on the original complaint. In order for such a refiled complaint to be entertained under the Policy, it is the refiling complainant’s burden to demonstrate that the refiled complaint constitutes “a truly new action” under the Policy, and not just an application for readjudication of the previous complaint. Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. Unless the refiling complaint can satisfy this high burden of establishing that the refiled complaint presents “a truly new action” under the Policy, the refiled complaint would amount to little more than an invitation to a subsequent panel to come to a different conclusion on the facts, in effect substituting its judgment for that of the prior panel. Id.6

In determining whether the Complainant has met this high burden in the case before it, the Panel is guided by the fundamental recognition that the Complainant bears the ultimate burden of establishing all three requirements under paragraph 4(a) of the Policy. As noted by the learned panel in Creo Products, in order to succeed as “a truly new action” a refiled complaint must independently prove to the satisfaction of the subsequent panel each of the three requirements of paragraph 4(a). Accordingly, where a previously unsuccessful complainant lodges a refiled complaint based on facts or circumstances arising subsequent to the decision on the original complaint, it is incumbent upon the refiling complainant to demonstrate that the new facts or circumstances relied upon are of such a nature that the complainant can offer proof regarding all three requirements of paragraph 4(a) in the event the refiled complaint is entertained.7 The Panel believes this approach to be consonant with general principles of law relating to the re-litigation of cases.

The Panel, applying the general principles discussed above in the particular circumstances of this case, concludes that the Complainant has not met its high burden of establishing that the Refiled Complaint should be entertained under the Policy. As noted above, the Refiled Complaint concerns (1) changes to the content of the Respondent’s website during the May 2007 period consisting of advertising links related to business schools and educational services, (2) a subsequent change on the website after the initial filing of the Complaint to add a searchable category for “Wharton Texas”, and (3) an invalid telephone number in the contact information furnished to the registrar of the disputed domain name.

In order to succeed under the Refiled Complaint the Complainant bears the burden of proof on all three requirements of paragraph 4(a) of the Policy. The Complainant was unsuccessful in Wharton I on the issues of bad faith registration and bad faith use of the disputed domain name, and the Wharton I Panel found that the Respondent had established rights or legitimate interests in the disputed domain name. The new facts and circumstances set forth in the Refiled Complaint, viewed in a light most favorable to the Complainant, would be relevant to the issue of the Respondent’s bad faith use of the domain name. That being said, paragraph 4(a)(iii) of the Policy requires proof that the Respondent registered the disputed domain name in bad faith and is using the domain name in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The issue of bad faith registration is to be determined with reference to the time the Respondent took possession of the domain name. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062. See also The Motley Fool, Inc. v. Domain Works, Inc.,
WIPO Case No. D2006-1625.

The Respondent registered the disputed domain name in March 2000, more than seven years before the events set forth in the Refiled Complaint. Given the prior determinations of the Wharton I Panel, these new events occurred so long after registration of the disputed domain name, for so brief a period of time, and are so remote as to have no relevance or probative value concerning the Respondent’s intentions at the time of registration of the disputed domain name. See The Motley Fool, Inc. v. Domain Works, Inc.,
WIPO Case No. D2006-1625; Intuit Inc. v. Nett Corp.,
WIPO Case No. D2005-1206.

For the foregoing reasons, the Panel finds that the Complainant has failed to meet its burden of establishing that the Refiled Complaint should be entertained under the Policy. The Refiled Complaint cannot be considered “a truly new action” because the new facts and circumstances alleged therein have no bearing on the element of bad faith registration, an issue on which the Respondent prevailed in Wharton I, making the Refiled Complaint in essence an application for readjudication of Wharton I.

7. Decision

In view of the Panel’s determination that the Refiled Complaint should not be allowed, the Refiled Complaint is dismissed.

William R. Towns Presiding Panelist

John R. Keys, Jr. Panelist

David E. Sorkin Panelist

Dated: October 5, 2007

1 Moniker Privacy Services is a privacy protective service affiliated with Moniker Online Services, LLC, the registrar of the disputed domain name.

2 It appears from the record that the Complainant previously had registered and was using the <wharton.com> domain name in connection with a website promoting The Wharton School.

3 The Complainant appears to have been unaware that Motherboards.com was still the registrant of the disputed domain name when the present Complaint was filed, since the registrar’s WHOIS registrant information at that time identified the registrant as Moniker Privacy Services. A change in the registrar’s WHOIS registrant information made a short time after to the filing of the Complaint identified Motherboards.com as the registrant.

4 In addition to the “Wharton Texas” category, the current iteration of the Wharton.com home page also contains categories for “Wharton New Jersey”, “Car Loans” and “Insurance”, all of which are linked to secondary web pages containing pay-per-click advertising links to other websites (“Sponsored Results”).

6 Unless the new facts or circumstances set forth in the refiled complaint address each element upon which the respondent prevailed in the first UDPR proceeding, a subsequent panel could reach a different result only by substituting its judgment for that of the prior panel.

7 As noted by several prior panels, the new evidence should at least be of a nature that “would probably have an important influence on the result of the case.” See Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490; Kur-und Verkehrsverein St. Moritz v. Domain Finance Ltd.,
WIPO Case No. D2004-0158.